Registration of a trademark – opposition procedure

After the reform of the trademark law, the Patent Office of the Republic of Poland examines only the absolute obstacles to the registration of a trademark, e.g., its distinctiveness. On the other hand, the question of the identity or similarity of trademarks is examined only as a result of the opposition of the proprietor of an earlier trade mark, e.g., registered. The above means that since 2016, the trademark registration procedure has been simplified for the benefit of the applicant, as the lack of examination of the similarity of signs ex officio significantly speeds up the trademark’s registration. On the other hand, the owners of the previously registered or registered trademarks must now take care of their brand themselves by filing an objection. Failure to file an opposition will result in the registration of an identical or similar trade mark to the extent that it is misleading.

Opposition

If the Patent Office of the Republic of Poland states that there are no absolute grounds for refusal to register a trademark, then the information about filing the application in the Patent Office Bulletin (BUP) is published. Within 3 months from the date of publication, the proprietor of an earlier application or protection right for a trademark should raise an objection if, in their opinion, the trademark applied is identical or similar to the point that it is misleading. Of course, in principle, the trademark applied for should be intended for identical or similar goods and services in order to recognize its identity or to find a risk of confusion with the earlier mark. The basis for making an objection is also an earlier personal or property law (e.g., property and personal copyrights to the logotype).

The possibility of concluding a settlement

After filing the objection, the Patent Office of the Republic of Poland notifies the applicant of the opposition to the registration of the trademark while also informing them about the possibility of an amicable settlement of the matter within 2 months, which comprises the so-called cooling off period. The entity submitting the objection to the registration of a trademark is also informed about the possibility of concluding a settlement. The deadline for concluding a settlement may be extended to six months.

Settlement

The content of the settlement may relate to the withdrawal of an objection to trademark registration, limitation of the scope of trademark application, withdrawal of trademark application or other relevant issues from the point of view of the interests of the trademark applicant or party opposing the registration.

No settlement

If no settlement is reached within the above-mentioned period, the applicant submits a response to the opposition to trademark registration, containing all objections to the lack of its justification. Subsequently, the entity submitting an objection to the registration of the trademark may respond to the content of the submitted response. Of course, it is possible that the parties will submit further letters in the course of the proceedings.

Decision of the Patent Office of the Republic of Poland

As a result of the examination of the case, the Office may issue a decision rejecting the opposition in its entirety, taking into account the objection in whole or in part or discontinuing the opposition proceedings altogether. Decisions on dismissal or inclusion are substantive. The Office assesses the legitimacy of the arguments put forward by the parties and recognizes, for example, that trademarks are similar to the degree that misleads the average consumer and takes into account the objections. The decision on cancellation concerns formal premises, e.g., the objection has been withdrawn. The decision of the Patent Office of the Republic of Poland is entitled to an application for reconsideration of the case. A complaint to the Voivodship Administrative Court may be filed against a decision issued as a result of a request for reconsideration, and then a cassation complaint may be filed with the Supreme Administrative Court.